Software Patent Wars: A New Hope

It has been a rough few years for software patents in Australia. Since 2010, the Patent Office appears to have been on a crusade to limit the extent of what can be patented in the computer-implemented space. Finally, after what seemed like an age of consistent rejections, the pattern has broken. On 22 July 2016, the Australian Patent Office issued a decision which upheld the patent eligibility of an invention relating to software functionality in a gaming machine. The decision is available here.

The technology in question is, in essence, related to a touch-screen GUI which allows a player to select a game and a bet denomination for use in the game. The main claim is as follows:

A gaming machine including a controller and a touch sensitive electronic display, the controller being arranged to cause a game selection image to be displayed on the electronic display, the game selection image including a plurality of separate image elements including:

a) a name of a game that is available for play on the gaming machine; andb) a set of different bet denominations for the game,

the gaming machine being further arranged to allow a player to select a game and a denomination by touching the touch sensitive electronic display where a respective denomination is displayed.

Given some of the more “creative” Patent Office arguments we have encountered in this area of technology in recent years, it is unsurprising that the patent applicant in this case was presented with objections during examination that could not be overcome. The Applicant elected to be heard on the matter before a Delegate of the Commissioner of Patents.

The Delegate provided an interesting summary of the current Australian law, culminating in an observation that when assessing whether or not technology Is patent eligible, there are a number of relevant factors to consider, including:

There must be more than an abstract idea, mere scheme or mere intellectual information.

Is the contribution of the claimed invention technical in nature?

Does the invention solve a technical problem within the computer or outside the computer?

Does the invention result in improvement in the functioning of the computer, irrespective of the data being processed?

Does the application of the method produce a practical and useful result?

Can it be broadly described as an improvement in computer technology?

Does the method merely require generic computer implementation?

Is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea?

Is there ingenuity in the way in which the computer is utilised?

Does the invention involve steps that are foreign to the normal use of computers?

Does the invention lie in the generation, presentation or arrangement of intellectual information?

Unfortunately, the Delegate remained imprecise as to which (if any) of these factors are in combination or isolation determinative one way or the other of patent eligibility for computer implemented inventions. Given that the list is not intended to be exhaustive, it is difficult to imagine that a successful determination would be required for each and every element; and surely the laws on subject matter eligibility could not possibly be that complex. Regardless, the list provides some useful guidance about the evolving position of the Patent Office, and will provide a useful reference point in addressing future Patent Office objections.

The crux of the Delegate’s findings were that:

It is reasonable to view the substance of the invention as the presentation of game information in a way that allows the game and bet denomination to be selected in a single action. It is apparent that this would achieve a practical and useful result by simplifying the use of the gaming machine by the player. Looking at the relevant considerations, the invention appears to require only generic computer implementation. However, it does not appear that it was normal (at the priority date) to configure a gaming machine interface in this particular way. Here information is located in a particular position and functionality is generated by the use of this positional location to improve the gaming machine. The contribution is technical in nature, and achieves a practical and useful result. On balance, I am satisfied that the claimed invention is a manner of manufacture.

There are a few important artefacts coming out of this conclusion. For instance, the Delegate indicates a nexus between what was normal as of the priority date (which was in 2003) and subject matter considerations. This alludes to what appears to be a growing ideology within the Office, which has no direct support from the legislation or the case law (that the inventive contribution itself must be technical in nature). In any event, the net result is that the position and function of icons in a GUI were found to be enough to confer patent eligibility, even in spite of a suggestion that this would be mere “generic computer implementation”.

Although Australian Patent Office decisions such as this are non-precedential, historically the Australian Patent Office has used them as such for its own purposes. Accordingly, the Delegate’s conclusions in this case should provide a useful tool for both patent applicants and examiners in clarifying the quagmire that is subject matter eligibility in Australia.

Shelston IP continues to follow developments in the software patent space closely, and our patent attorneys are always happy to discuss the practical ramifications of this and other decisions in respect of particular technological and commercial situations.

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